Dell Inc. v. CS SJE
Claim Number: FA2006001899762
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Texas. Respondent is CS SJE (“Respondent”), Delhi.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dellsupport-us.co>, <dellsupport-us1.co>, <dellsupport-us2.co>, <dellsupport-us3.co>, <dellsupport-us4.co>, <dell-support1.co>, <dell-support2.co>, <dell-support3.co>, and <dell-careus.co>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 10, 2020; the Forum received payment on June 10, 2020.
On June 11, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dellsupport-us.co>, <dellsupport-us1.co>, <dellsupport-us2.co>, <dellsupport-us3.co>, <dellsupport-us4.co>, <dell-support1.co>, <dell-support2.co>, <dell-support3.co>, and <dell-careus.co> domain names is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dellsupport-us.co, postmaster@dellsupport-us1.co, postmaster@dellsupport-us2.co, postmaster@dellsupport-us3.co, postmaster@dellsupport-us4.co, postmaster@dell-support1.co, postmaster@dell-support2.co, postmaster@dell-support3.co, postmaster@dell-careus.co. Also on June 11, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain names <dellsupport-us.co>, <dellsupport-us1.co>, <dellsupport-us2.co>, <dellsupport-us3.co>, <dellsupport-us4.co>, <dell-support1.co>, <dell-support2.co>, <dell-support3.co>, and <dell-careus.co> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims that it has rights in the DELL mark established through its ownership of the international portfolio of trademark registrations described below and the goodwill that it has acquired through long and extensive use of the DELL trademark and service in its global business manufacturing and marketing computers and associated goods and services. Complainant asserts that it is the second largest manufacturer of PCs in India, where Respondent is based, having more than 25 percent of the market share for computers as of 2019.
Complainant submits that the disputed domain names are identical or confusingly similar to Complainant’s DELL marks. Specifically, Complainant argues, each of the disputed domain names incorporates its DELL mark in its entirety, tacking on the terms “us” and “support” or “care” - which terms it argues, are highly likely to be associated with Complainant’s products and services offered in the United States and India.
Complainant notes that certain of the disputed domain names contain a number or a hyphen and argues that the presence of these elements is unlikely to distinguish the disputed domain names from Complainant’s DELL marks in the minds of consumers.
Complainant adds that the presence of the generic top-level domain extension <.co> is irrelevant in the context of an analysis for the purposes of Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names, arguing that Respondent is not commonly known by the disputed domain names, nor has Complainant licensed or otherwise permitted Respondent to use its DELL marks, or any other mark owned by Complainant.
Complainant additionally argues that Respondent has neither used, nor made any demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
Complainant refers to screenshots of the pages to which the disputed domain names resolve which are adduced in evidence as an annex to the Complaint and notes that all of the disputed domain names. aside from domain name <dellsupport-us2.co>, resolve to identical webpages displaying the message “website coming soon!”; and the disputed domain name <dellsupport-us2.co> resolves to an error page, stating “This site can’t be reached.”
Complainant states that it is concerned that there is a risk that Respondent may intend to sell the names based on the value of the DELL mark, or may use the domain names for a website which is highly likely to cause consumers to mistakenly believe that Respondent, or Respondent’s website is, or is authorized by, Complainant.
Complainant further argues that the passive holding of the disputed domain names by Respondent, is evidence that Respondent has no rights or legitimate interests in the disputed domain names, submitting that prior panels established under the Policy have held that a respondent who is passively holding a domain name for over two months at the time of filing does not have rights or legitimate interests in a domain name. See Dell Inc. v. Wendell Austin, FA 1877900 (Forum Feb. 3, 2020).
Moreover, Complainant alleges that Respondent appears to be using the disputed domain names for a fraudulent email scheme. In support of this allegation, Complainant refers to copies of a number of highly similar emails sent by Respondent sent from the <care@dellsupport.us.co> address on March 12, March 17, March 19, April 19 2020 and from <care@dell-support1.co> address on June 1,2020, to third parties, purporting to be service renewal notices from Complainant. In these emails Respondent purports to impersonate Complainant. The emails purport to be support renewal reminders sent to Complainant’s customers stating “This is an automated renewal notice for your Dell annual maintenance service charge billed annually.” and going on to inform the customer that “Since your plan expired on [date], we have auto renewed your plan and charged USD 299.99 against your account. We understand that you are busy hence could not get through to you when we tried to contact you.” The emails likewise provide various “customer service” numbers for customers to call if they have a question; these numbers appear to have no affiliation with Complainant.
Complainant asserts that these emails have no affiliation with Complainant and submits that Respondent is presumably phishing for Complainant’s customers’ personal information for nefarious purposes. Complainant submits that such use is not a legitimate non-commercial or fair use of the domain names.
Complainant submits that the disputed domain names were registered and are being used in bad faith, arguing that the inclusion of Complainant’s DELL mark in the disputed domain names show that it is clear that the registrant was aware of Complainant and its DELL mark when the disputed domain names were registered.
Complainant adds that Respondent’s passive holding of the domain names evidences bad faith registration and use.
Furthermore, Complainant submits that Respondent’s use of the disputed domain names to impersonate Complainant, sending fraudulent emails to Complainant’s customers is evidence of bad faith use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant carries on a global business using the DELL mark in the manufacture and marketing of computers and related goods and services.
Complainant owns a portfolio of trademark and service mark registrations for DELL mark including the following in the United States and India where Respondent is based:
· United States registered trademark DELL (design), registration number 1,860,272 registered on October 25, 1994 for goods in international class 9;
· United States registered service mark DELL, registration number 2,236,785, registered on April 6, 1999 on the Principal Register for services in international class 40;
· United States registered trademark DELL, registration number 2,794,705, registered on December 16, 2003 for goods in international class 9;
· United States registered service mark DELL, registration number 2,806,769, registered on January 20, 2004 on the Principal Register for services in international class 37;
· United States registered service mark DELL, registration number 2,806,770, registered on January 20, 2004 on the Principal Register for services in international class 37;
· United States registered trademark DELL, registration number 2,808,852, registered on January 27 2004 for goods in international class 2;
· United States registered trademark and service mark DELL (Design) registration number 3,215,023 registered on March 6, 2007 for goods and services in international classes 2, 9, 36, 37, 40 and 42;
· Indian registered trademark DELL, registration number1190375, registered on May 7, 2003 for goods in class 2;
· Indian registered trademark DELL, registration number 1190376, registered on July 29, 2005 for goods in class9;
· Indian registered service mark DELL, registration number 1239350, registered on September24 2003 for services in class 37; and
· Indian registered service mark DELL, registration number 1335057 registered on January 28, 2005 for services in class 36.
According to the published WhoIs information the disputed domain names were registered on the following dates:
· <dellsupport-us.co> was registered on March 9, 2020;
· <dellsupport-us1.co> was registered on March 20, 2020;
· <dellsupport-us2.co> was registered on March 20, 2020;
· <dellsupport-us3.co> was registered on March 20, 2020;
· <dellsupport-us4.co> was registered on March 20, 2020;
· <dell-support1.co> was registered on May 22, 2020;
· <dell-support2.co> was registered on May 22, 2020;
· <dell-support3.co> was registered on May 22, 2020;
· <dell-careus.co> was registered on March 16, 2020.
The disputed domain name <dellsupport-us2.co> resolves to an error page, stating “This site can’t be reached”. Each of the other disputed domain names resolve to identical webpages displaying the message “website coming soon!”.
There is no information available about Complainant except for that provided In the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the of registration details of the disputed domain names.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced clear and convincing evidence that it has rights in the DELL trademark and service mark acquired through its ownership of the abovementioned portfolio of registrations and its extensive use of the mark in its global business manufacturing and marketing computers and associated goods and services.
Each of the nine disputed domain names <dellsupport-us.co>, <dellsupport-us1.co>, <dellsupport-us2.co>, <dellsupport-us3.co>, <dellsupport-us4.co>, <dell-support1.co>, <dell-support2.co>, <dell-support3.co>, and <dell-careus.co> are composed of Complainant’s DELL mark in its entirety followed by non-distinctive elements such as the word “support” or “care”, the letters “us”, the numbers 1,2, 3 or 4 and in some cases a hyphen.
In respect of each of the disputed domain names, Complainant’s DELL mark is the initial, dominant and only distinctive element. In each case the other elements either separately or in combination have no distinctive characteristics.
For the purposes of comparison, the country-code top-level domain (ccTLD) extension <.co> may be ignored because in the circumstances of this Complaint the domain extension would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names arguing that Respondent is not commonly known by the domain names at issue; nor has Complainant licensed or otherwise permitted Respondent to use its DELL marks, or any other mark owned by Complainant; that Respondent has neither used, nor made any demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; that all of the disputed domain names, aside from <dellsupport-us2.co>, host identical webpages displaying the message “website coming soon!”; and the disputed domain name <dellsupport-us2.co> features an error page, stating “This site can’t be reached.”; that there is a risk that Respondent may intend to sell the names based on the value of the DELL mark, or may use the disputed domain names for a website which is highly likely to cause consumers to mistakenly believe that Respondent, or Respondent’s website is, or is authorized by, Complainant; that in any event the passive holding of the disputed domain names by Respondent, is evidence that Respondent has no rights or legitimate interests in the domain names.
Most seriously, Complainant has also provided evidence that Respondent appears to be using two of the disputed domain names for a fraudulent email scheme. In an annex to the Complaint, Complainant has adduced in evidence copies of similar emails sent by Respondent from the <care@dellsupport.us.co> address on March 12, March 17, March 19, April 19 2020 and from <care@dell-support1.co> address on June 1,2020, in which Respondent purports to impersonate Complainant.
It is well established that once a complainant makes out a prima facie case, the burden of production shifts to the respondent to prove its rights or legitimate interests in a disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain names. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The selection and inclusion of Complainant’s distinctive DELL mark as the initial, dominant and only distinctive element of each of the disputed domain names must lead to the conclusion that the registrant of each of the disputed domain names was aware of Complainant, its DELL mark and its reputation when each of the disputed domain names were registered. This Panel that on the evidence adduced, on the balance of probabilities the disputed domain names were registered in bad faith with Complainant’s name and mark in mind in order to take predatory advantage of Complainant’s name, mark and reputation.
Complainant has adduced evidence of bad faith use of two of the disputed domain names in the form of copies of emails sent from the <care@dellsupport.us.co> address on March 12, March 17, March 19, April 19 2020 and from <care@dell-support1.co> address on June 1,2020, to third parties, in which Respondent is impersonating Complainant. The emails misleadingly purport to be service renewal notices sent by Complainant to its customers. Complainant has averred that it has no connection with these emails.
On the evidence on record these two domain names <care@dellsupport.us.co> and <care@dell-support1.co> as well as the remaining disputed domain names resolve to inactive webpages and in the circumstances of this case, this Panel finds that Respondent’s passive holding of the remaining domain names evidences bad faith registration and use.
Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellsupport-us.co>, <dellsupport-us1.co>, <dellsupport-us2.co>, <dellsupport-us3.co>, <dellsupport-us4.co>, <dell-support1.co>, <dell-support2.co>, <dell-support3.co>, and <dell-careus.co> domain names and each of them be TRANSFERRED from Respondent to Complainant.
_________________________
James Bridgeman SC
Panelist
Dated: July 7, 2020
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